In Novartis AG v. Noven Pharmaceuticals Inc., Appeal Nos. 2016-1678, 2016-1679, the Federal Circuit held that prior judicial opinions concerning the validity of patent claims do not bind the PTAB in subsequent proceedings.
Appellants appealed the PTAB’s final written decisions in IPR proceedings, finding Appellants’ claims obvious over the prior art. Appellants contended that the PTAB’s findings unlawfully reached different conclusions than in prior federal district court litigation, which addressed the “same” arguments and the “same” evidence, and yet ultimately found the same claims to be nonobvious.
The Federal Circuit rejected Appellant’s arguments on factual and legal grounds. The prior proceedings did not share the “same” record as PTAB, because additional prior art and declarations were submitted to the PTAB that were not considered in the prior litigation. In addition to relying on the dissimilar records, the Federal Circuit also rejected Appellant’s arguments as a matter of law. In an inter partes review, the petitioner must prove unpatentability by a preponderance of the evidence, whereas in district-court litigation the challenger must prove unpatentability by clear and convincing evidence. Thus, the Federal Circuit reasoned, “the PTAB properly may reach a different conclusion based on the same evidence” due to the different burdens of proof.
The Federal Circuit also reviewed the PTAB’s findings of obviousness and affirmed the PTAB’s conclusions.